DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “acquiring unit” and “driving unit” in claims 1 and 21.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4, 11, 15, 16, 19 and 21-23 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 18 and 20-25 of U.S. Patent No. 12,693,232 in view of Pan et al. (Pan) (2022/0404722).
Regarding claim 1, the claim 1 of the patent is directed to a light source apparatus comprising: an input optical system including a first optical member configured to irradiate a target material with excitation light (claim 1); an output optical system including a second optical member configured to extract light generated by irradiating the target material with the excitation light (claim 1); a target holding unit configured to hold the target material (claim 1), an acquiring unit (claim 1), a driving unit (claim 1) and a control unit (claim 1). Although claim 1 of the patent is not directed to the driving unit configured to cause a position of a focusing point of at least one of the first optical member and the second optical member to vary, claim 1 of the patent is directed to the driving unit configured to cause relative positions of an optical member and the target holding unit to vary, the optical member including at least one of the first optical member and the second optical member. Therefore, it would have been obvious to one of ordinary skill in the art to cause a position of a focusing point of the optical members to vary since varying the position of the target holding unit and the optical members would impact the focusing point of at least one of the first optical member and the second optical member in order to accommodate the position of the target material. Further, although claim 1 of the patent is directed to the acquiring unit configured to acquire displacement of a surface position of the target material and the control unit configured to drive the driving unit based on the displacement, the patent is not directed to the acquiring unit configured to acquire a surface position of the target material and the control unit configured to drive the driving unit based on the surface position. Pan discloses in Fig. 5, an optical sensor 501 for acquire the location of the tin droplets 505 (para 0063) and the displacement of the target by taking a plurality of images over time (para 0070). Therefore, it would have been obvious to one of ordinary skill in the art to be modify the acquiring unit which acquires displacement of a surface position of the target material to acquire a surface position of the target and to control the driving unit based on the surface position to direct the light to and from the target material since such modification requires only routine skill in the art as taught by Pan.
Claim 4 corresponds to claim 7 of the patent.
Claim 11 corresponds to claim 18 of the patent.
Claim 15 corresponds to claim 20 of the patent.
Claim 16 corresponds to claim 21 of the patent.
Claim 19 corresponds to claim 22 of the patent.
Regarding claim 21, claim 23 of the patent is directed to a light source control method comprising: a step of holding a target material with a target holding unit (claim 23); a step of causing an input optical system including the first optical member to irradiate the target material with excitation light (claim 23); and a step of extracting, with an output optical system including the second optical member, light generated by irradiating the target material with the excitation light (claim 23). Although claim 23 of the patent is not directed to a driving unit to cause a position of a focusing point of at least one of a first optical member and a second optical member to vary, claim 23 of the patent is directed to a step of causing, by a driving unit, relative positions of an optical member and the target holding unit to vary. Therefore, it would have been obvious to one of ordinary skill in the art to cause a position of a focusing point of the optical members to vary since varying the position of the target holding unit and the optical members would impact the focusing point of at least one of the first optical member and the second optical member in order to accommodate the position of the target material. Further, although claim 23 of the patent is directed to a step of acquiring displacement of a surface position of the target material with an acquiring unit; a step of causing, by a driving unit varying based on the displacement, relative positions of an optical member and the target holding unit, claim 23 does not disclose a step of acquiring a surface position of the target material with an acquiring unit; a step of a control unit allowing, based on the surface position, a driving unit to cause a position of a focusing point of at least one of a first optical member and a second optical member to vary. Pan discloses in Fig. 5, an optical sensor 501 for acquire the location of the tin droplets 505 (para 0063) and the displacement of the target by taking a plurality of images over time (para 0070). Therefore, it would have been obvious to one of ordinary skill in the art to be modify the acquiring unit which acquires displacement of a surface position of the target material to acquire a surface position of the target and to control the driving unit based on the surface position to direct the light to and from the target material since such modification requires only routine skill in the art as taught by Pan.
Claim 22 corresponds to claim 24 of the patent.
Claim 23 corresponds to claim 25 of the patent.
Allowable Subject Matter
Claims 2, 3, 5-10, 12-14, 17, 18 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 1-23 would be allowable if the obviousness double patenting rejections are overcome.
The following is an examiner’s statement of reasons for allowance:
Bykanov et al. (2015/0076359) discloses a light source apparatus (Fig. 1) comprising an input optical system (122a, 122b, 130, para 0037, 0040) to irradiate a target material (plasma forming target material, para 0033) with excitation light, an output optical system (106, para 0056), a target holding unit (102, para 0056). However, Bykanov et al. does not disclose an acquiring unit to acquire a surface position of the target material, a driving unit and driving the driving unit based on the surface position.
Kurosawa (2019/0288478) discloses a light source apparatus (Fig. 1) comprising an input optical system (54, 56, para 0073) to irradiate a target material (para 0069), an output optical system (24, para 0070), a target holding unit (18, para 0069) and an acquiring unit (42) to acquire position of the target material (para 0071). However, the acquiring unit off Kurosawa detects position of the target (44, para 0071), but does not acquire a surface position of the target material.
Kusunose (2002/0080834) discloses a light source apparatus (Fig. 1A, 1B) comprising an input optical system (Fig. 1B, para 0020), an output optical system (Fig. 1A, optical path L, para 0022), a target holding unit (2a, para 0021), an acquiring unit (5) that detects rotation position of the motor and the position of the target holding unit (para 0023) and driving the light sources in synchronization with the rotation of the target holding unit. However, Kusunose does not disclose an acquiring unit to acquire a surface position of the target material.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER B KIM whose telephone number is (571)272-2120. The examiner can normally be reached M-F 8:00 AM - 4:00 PM.
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/PETER B KIM/Primary Examiner, Art Unit 2882 August 21, 2026
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